Ex Parte 5675362 et al

Board of Patent Appeals and Interferences

Aug 22, 2012

90009464 (B.P.A.I. Aug. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/009,464 05/13/2009 5675362 128480.0102 3176
27557 7590 08/23/2012
BLANK ROME LLP
WATERGATE
600 NEW HAMPSHIRE AVENUE, N.W.
WASHINGTON, DC 20037
EXAMINER
FERRIS III, FRED O
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/23/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TYPHOON TOUCH TECHNOLOGIES, INC.
Appellant
____________

Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362
Technology Center 3900
____________

Before HOWARD B. BLAKENSHIP, RICHARD M. LEBOVITZ and KARL
D. EASTHOM, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal by the Patent Owner from the Patent
Examiner’s rejections of claims 12-17 in an ex parte reexamination of U.S.
Patent No. 5,675,362. The Board’s jurisdiction for this appeal is under 35
U.S.C. §§ 6 and 134. We affirm.

Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

2
STATEMENT OF THE CASE
This is an appeal from an ex parte reexamination of U.S. Pat. No.
5,675,362, issued October 7, 1997 (hereinafter, the ‘362 patent). The Patent
Owner is Typhoon Touch Technologies, Inc. App. Br. 1. The patent expired
on January 3, 2012.1 A Request for Reexamination was filed by a Third-
Party Requester on May 13, 2009 pursuant to 35 U.S.C. §§ 302-307 and 37
C.F.R. § 1.510. The Third-Party Requester is Apple, Inc.
The original patent has 13 claims. Claims 1-11 are not subject to
reexamination. Claims 14-17 were added during the reexamination
proceeding. Claims 12-14, 16, and 172 stand finally rejected by the Patent
Examiner over prior art. Answer 5 & 19-20. Claim 15 is objected to. Patent
Owner, who is also the Appellant in this appeal, appeals from the Examiner’s
Final Rejection.
Claims 12-14, 16, and 17 stand rejected as follows:
1. Claims 12-14, 16, and 17 under 35 U.S.C. § 102(e) as anticipated by
Dormond,3 or, in the alternative, under 35 U.S.C. § 103(a) as obvious over
Dormond;

1 The first page of the ‘362 patent states that the “term of this patent shall not
exceed beyond the expiration date of Pat. No. 5,379,057.” U.S. Pat.
5,379,057 expired January 3, 2012. Decision in the ex parte reexamination of
US 5,379,057, Appeal 2012-006709, Reexamination Control 90/009,463.
2 The heading in the Answer on page 5 lists claim 15 as rejected. However,
claim 15 was objected to in the Final Rejection (pages 2 and 25). The
Examiner did not indicate in the Answer that a new ground of rejection of
claim 15 was being made. Consequently, we assume that the Examiner erred
in rejecting claim 15 in the Answer.
3 U.S. Patent No. 4,839,822, issued June 13, 1989.
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

3
2. Claims 12 and 13 under 35 U.S.C. § 103(a) as obvious in view of
Dormond and Smith;4
3. Claims 12 and 13 under 35 U.S.C. § 103(a) as obvious in view of
Dormond and Crossland;5
4. Claims 12 and 13 under 35 U.S.C. § 103(a) as obvious in view of
Montagna;6
5. Claims 12 and 13 under 35 U.S.C. § 103(a) as obvious in view of
Montagna and Smith; and
6. Claims 12 and 13 under 35 U.S.C. § 103(a) as obvious in view of
Montagna and Crossland.

CLAIMS 14-17
Claims 14-17 were added by amendment on February 2, 2010 and
entered by the Examiner. Final Office Action, mailed July 19, 2010.
However, the ‘362 patent expired January 3, 2012. Under 37 C.F.R. §
1.530(j):
No amendment may be proposed for entry in an expired patent.
Moreover, no amendment, other than the cancellation of claims,
will be incorporated into the patent by a certificate issued after the
expiration of the patent.
As the ‘362 patent has expired, claims 14-17, which were added by
amendment, are barred by 37 C.F.R. § 1.530(j). We shall therefore treat such
claims as cancelled and shall not consider Rejection 1 as it relates to these
claims.

4 U.S. Patent No. 4,928,094, issued May 22, 1990.
5 U.S. Patent No. 4,720,781, issued January 19, 1988.
6 U.S. Patent No. 4,899,292, issued February 6, 1990.
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

4
RELATED APPEALS AND LITIGATION
The ‘362 patent is a continuation U.S. Pat. No. 5,379,057 (“the ‘057
patent”). ‘362 patent, cover page, [63]. The ‘057 patent is subject to ex parte
reexamination. Reexamination Control 90/009,463. An appeal of that
reexamination has been concurrently decided with this one. Decision in
Appeal 2012-006709.
The ‘057 and ‘362 patents have been involved in patent litigation. App.
Br. 1. The only litigation we have been informed of was between Patent
Owner, Typhoon Touch Technologies, Inc., as Plaintiff and Appellant, and
several Defendants, in the United States District Court for the Eastern District
of Texas. Typhoon Touch Technologies, Inc. et al. v. Dell et al., No.6: 07-cv-
00546, 2009 U.S. Dist. LEXIS 64013 (E.D. Tex. July 23, 2009). The District
Court found the ‘057 patent not infringed and certain claims invalid on
grounds of claim indefiniteness. The District Court decision was appealed to
the Federal Circuit by Patent Owner. The Federal Circuit affirmed the
holding on non-infringement and reversed the judgment of invalidity.
Typhoon Touch Technologies, Inc. v. Dell, Inc. 659 F.3d 1376 (Fed. Cir.
2011).
CLAIMS 12 and 13
Claims 12 and 13 read as follows:
12. A portable, keyboardless computer including an
input/output device for entering and displaying information,
said computer comprising:
a memory for storing a data collection application and various
libraries relating to contents and formats of the information
displayed by the input/output device;
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

5
a processor coupled to said memory and the input/output device
for executing said data collection application; and
a run-time executor for executing said application and said
libraries to facilitate data collection operations.
13. The unit of claim 12 wherein said libraries include:
a sequential library of possible responses configured for display
by the input/output device in selected ones of said formats;
a consequential library of one of actions and executable
instructions associated with said possible responses for
changing the flow of said data collection application; and
a syntax library for changing the syntax of the information
displayed by the input/output device.

CLAIM 12
Claim 12 is drawn to a portable, keyboardless computer including an
input/output device for entering and displaying information. The computer
comprises:
• a memory for storing a data collection application and various
libraries;
• a processor coupled to said memory and the input/output device for
executing said data collection application; and
• a run-time executor for executing said application and said libraries to
facilitate data collection operations.

Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

6
CLAIM INTERPRETATION
“Run-time executor”
One of the principal issues in this appeal is whether the Dormond and
Montagna publications describe the claimed “run-time executor.” Citing the
‘362 patent’s written description, the Patent Owner contends that neither
Dormond nor Montagna teach a “run-time executor” as claimed in the ‘362
patent. Because the meaning of the term is in dispute, we first must interpret
it before comparing it to the prior art.
Claim 12 comprises “a memory for storing a data collection application
and various libraries” and “a processor coupled to said memory.” The claim
describes the function of the “run-time executor” as “for executing said
application and said libraries to facilitate data collection operations.” The run-
time executor thus executes the data collection application and libraries “to
facilitate data collection operations.” We look to the ‘362 patent’s written
description to see if these terms in the claim are afforded a special definition.
Otherwise, we give the terms their ordinary and customary meaning “that the
term would have to a person of ordinary skill in the art in question at the time
of the invention, i.e., as of the effective filing date of the patent application.”
Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). “[A] person of
ordinary skill in the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term appears, but in the
context of the entire patent, including the specification.” Phillips, 415 F.3d at
1313.

Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

7
• Specification
The “Summary of the Invention” describes an object of the invention as
a portable, general purpose computer “which permits facilitated data entry”
and which “facilitates the process of data collecting and recording.” ‘362
patent, col. 2, ll. 15-17 & 26-28. “For data collecting and recording, the
memory stores a data collection application.” ‘362 patent, col. 2, ll. 59-61.
The latter is recited as a specific element of claim 12 (“a memory for storing a
data collection application”).
The computer is said to comprise a central processing unit (“CPU”), or
processor, which “executes the [data collection] application and processes the
manually entered data pursuant to the application.” ‘362 patent, col. 2, ll. 66-
67. Although the CPU is first mentioned in the ‘362 patent as executing the
data collection application, in subsequent disclosure, a “run-time program”
stored in the computer is described as performing this function. ‘362 patent,
col. 7, ll. 48-49. In other words, the CPU is hardware and the run-time
program is software.
As observed by the Examiner, the term “run-time executor” is only
used once in the ‘362 patent’s written description when the term appears in
the patent abstract. In the abstract, the ‘362 patent states that a “run-time
executor allows the processor to execute the data entry application.” ‘362
patent, Abstract. This description is consistent with the express function of
the run-time executor recited in the claim to execute the data collection
application, where data entry and data collection would be understood to be
overlapping processes because entry and collection would involve the same
steps.
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

8
Although the term “run-time executor” is only used once in the patent’s
written description, there are descriptions of a “run-time process,” “run-time
software,” and “run-time program.” We interpret these to be the same
elements as the claimed run-time executor since each of the former are
described as executing the data collection application. Figure 11, for
example, is said to show “a flow chart of the run-time process for executing a
data collecting application.” ‘362 patent, col. 4, ll. 23-25 (emphasis added).
Figure 11 uses the term “run-time software” and lists a flow chart of
operations performed by the software in executing the data collection
application. Figure 12 refers to the “run-time program of FIG. 11,” yet
another term for the same software. ‘362 patent, col. 4, ll. 26-29.
Patent Owner did not identify a specific definition in the ‘362 patent for
“run-time executor,” “run-time software,” “run-time program,” or any of the
other terms which appear to describe the same software for executing the data
collection program and libraries. The ‘362 patent describes various tasks that
can be performed by a run-time program in preferred embodiments, but we do
not discern any language in the claims or in the patent specification which
would require the run-time program to perform such tasks.
For example, the section titled “Description of the Preferred
Embodiment” describes the flow diagram of Figure 11 “of the run-time
process 300 by which an application is executed.” ‘362 patent, col. 11, ll. 50-
51. The description discloses various tasks which are accomplished by the
run-time process. ‘362, col. 11, l. 50 to col. 12, l. 60. Miscellaneous features
of the run-time program are also described in this section, including one
which enables the run-time process to modify the library fields. ‘362 patent,
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

9
col. 15, ll. 15-30. However, such tasks and features are listed in the
description of a preferred embodiment of the run-time program. We cannot
find a description or special definition in the ‘362 patent which would require
the run-time program to have such functions and cause us to construe the term
so narrowly. While certain embodiments of the run-time software may
possess such features, it is improper to read limitations from the specification
in to the claim. “[W]hile it is true that claims are to be interpreted in light of
the specification and with a view to ascertaining the invention, it does not
follow that limitations from the specification may be read into the claims.”
Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988). “[L]imitations are
not to be read into the claims from the specification.” In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). See also Enzo Biochem, Inc. v. Applera
Corp., 599 F.3d 1325, 1342 (Fed. Cir. 2010) (“‘it is improper to read
limitations from a preferred embodiment described in the specification – even
if it is the only embodiment – into the claims absent a clear indication in the
intrinsic record that the patentee intended the claims to be so limited.’”).
Then if we do not read the limitations of the preferred embodiments
into the claim, then what is the proper interpretation of “run-time executor”?
Because the claim expressly recites its function “for executing said application
and said libraries to facilitate data collection operations,” the claimed run-time
executor must at least possess this ability. There are two phrases recited in
this limitation that require interpretation: “execute” and “facilitate data
collection operations.”
Once again, we see no special definition of these terms in the ‘362
patent. However, the phrase “for executing” was construed by the District
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

10
Court to require that the function to be executed is performed. Typhoon Touch
Technologies, Inc. et al. v. Dell, Inc. et al., Case No. 6:07-cv-546, (E.D. Tex.)
(Memorandum Opinion and Order, p. 13). Thus, “to execute” in claim 1 is
reasonably interpreted to mean that a function is performed by the run-time
executor, which is this is case is carrying out the instructions of the data
collection application. The data application is characterized in preferred
embodiments as a series of questions. ‘362 patent, col. 8, ll. 9-16. Thus,
executing the application in this embodiment would be displaying the
questions to the user in order to solicit an answer – a process of “data
collection.” ‘362 patent, col. 11, l. 49 to col. 12, l. 60.
Absent a special definition, we give the term “facilitate” its ordinary
and customary meaning - to “help” or “assist.” Thus, to “facilitate data
collection operations” would be construed by the ordinary skilled worker to
mean that data collection is helped or assisted. This function is served by the
run-time utility. For example, the run-time utility can therefore help or assist
in data collection by displaying questions from the data collection application.

• Wolfe Declaration
Patent Owner seeks to define the term “run-time executor,” by
providing testimony in a written declaration by Andrew Wolfe, Ph.D. Dr.
Wolfe holds a B.S.E.E. in Electrical Engineering and Computer Science from
The Johns Hopkins University, and an M.S. and Ph.D. in Computer
Engineering from Carnegie Mellon University. Wolfe Decl., ¶ 2. Dr. Wolfe
stated that he has over 27 years of experience in the fields of electrical
engineering and computer science. Id. He testified he was involved in the
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

11
development of computer software and hardware since about 1983. Id. The
field of the invention relates to personal computing and portable computers
for remote data collecting and recording. ‘362 patent, col. 1, ll. 15-20.
Accordingly, based on his education and experience, we find that Dr. Wolfe is
qualified to testify as an expert in this proceeding.
Dr. Wolfe testified in his declaration that a run-time “utility” (which is
“used interchangeably with ‘executor’”) was known in 1988, when he was
working in the industry, “as something that could be used on a system as a
tool to handle basic processes to free up the software developer/programmer
to focus on creating a specific software application.” Wolfe Decl., ¶ 9. Dr.
Wolfe testified that it “would provide the detailed program code for complex
computer functions.” Id. at p. 2-3, ¶ 9.
Dr. Wolfe’s testimony is consistent with the described and claimed
function of the run-time utility to execute the data collection application and
libraries by providing the detailed program code to display the specific
questions and information created for the application and libraries. ‘362
patent, col. 11, l. 49 to col. 12, l. 60.
Dr. Wolfe further testified that the ‘362 patent discloses “various ways
the run-time tool ‘facilitates’ collecting data using a separate data collection
application running on a portable computing device.” Wolfe Decl. ¶ 10.
However, as discussed above, these tasks (“ways”) are preferred
embodiments, and we do not limit the run-time utility to preferred
embodiments.

Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

12
Summary
In sum, the “run-time executor for executing said application and said
libraries to facilitate data collection operations” would be reasonably
interpreted by one of ordinary skill in the pertinent art to be a software
program which carries out the instructions of a data collection application and
libraries, helping or assisting in the collection of data. Our interpretation is
consistent with the District Court’s interpretation of a “run-time executor” as
“‘a software program invoked during execution of a data collection
application to manage the various tasks involved in executing the data
collection application.’” Typhoon Touch Technologies, Inc. et al. v. Dell et
al., No.6: 07-cv-00546, 2009 U.S. Dist. LEXIS 64013 (E.D. Tex. July 23,
2009) (Memorandum Opinion and Order, p. 31).

“Syntax library”
Claim 13, depends on claim 12, and further recites that the portable,
keyboardless computer comprises a “syntax library for changing the syntax of
the information displayed by the input/output device.” The meaning of this
phrase is in dispute. Consequently, before comparing the claim to the prior
art, we must properly construe it.
The ‘362 patent does not expressly define the term “syntax library.”
Under the section titled “Syntax Library,” the ‘362 patent contains the
following disclosure:
A syntax library allows the application designer or the user to
change the syntax that is being used in the run-time process.
Basically, run-time uses a pre-defined syntax which are standard
messages that are displayed on the screen to interact with the
user. The user or application designer might want to change these
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

13
messages which can be done going into the syntax library by
touching the appropriate button on the screen. The user or
application designer can type the desired messages on the screen
using a simulated keyboard display.
Col. 14, ll. 27-35.
Figure 9 shows a diagram of library maintenance which includes the
commands add, modify, and delete for the syntax library. Fig. 9; col. 4. ll. 18-
19.
The syntax library is therefore described as a library of standard
messages which are displayed to a user. This description is consistent with
the definition adopted by the District Court in the related litigation. Typhoon
Touch Technologies, Inc. et al. v. Dell et al., No.6: 07-cv-00546, 2009 U.S.
Dist. LEXIS 64013 (E.D. Tex. July 23, 2009).
Claim 13 also contains a functional recitation that the syntax library is
“for changing the syntax of the information displayed by the input/output
device.” The Examiner interpreted this to mean:
messages (syntax information) from the syntax library are
changed on the output display. In other words, the claim only
requires . . . , where at run-time a predefined syntax is used to
display standard messages on the screen to interact with the user.
There is nothing in the language of the claim to suggest an
understanding of the claim construction where the user or
designer can change the syntax by typing a message via a
simulated keyboard display or rewriting code as suggested by
Patent owner.
Answer 28. The Examiner concludes that the “changing of syntax can be
understood to simply mean the display of the different (changed) pre-defined
syntax standard messages that are displayed on the screen at run-time to
interact with the user.” Id.
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

14
Patent Owner contends that the recited limitation means that the syntax
information can be modified (“changing”) before the run-time process and
prior to its display to the user. App. Br. 16: 12-23.
The Examiner’s interpretation of the disputed claim limitation is not
reasonable when read in the light of the ‘362 patent. The Examiner and Patent
Owner agree that a syntax library comprises the standard messages displayed
to a user. The only way the message can be conveyed to the user is by its
physical display on the “input/output device.” The claim specifies this act by
stating “for changing the syntax of the information displayed by the
input/output device.” (Emphasis added.) Construing the phrase “changing the
syntax of the information” to mean simply such physical display of
information or messages is therefore redundant and unreasonable because the
claim specifically refers to the display of the information. Rather, the more
reasonable and consistent interpretation is that information is changed and
then the changed information is displayed to the device.
The ‘362 patent describes the disputed limitation in the quoted passage
above, stating that the user or application “might want to change these
messages which can be done going into the syntax library by touching the
appropriate button on the screen” and then typing “the desired messages on
the screen using a simulated keyboard display.” ‘362 patent, col. 14, ll. 31-35.
We do not discern any language in the claim that would require the change to
be implemented by first selecting a button on a screen. Rather, the claim does
not restrict how the syntax of information is changed.
In sum, we interpret “for changing the syntax of the information
displayed by the input/output device” to mean that the syntax information can
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

15
be changed in the library, and the changed information can be displayed by
the input/output device.

DORMOND REJECTIONS
Claim 12
The Examiner found that Dormond described all the elements of the
claimed “portable, keyboardless computer” recited in claim 12. With respect
to the “portable” limitation in the claim preamble, the Examiner found this
element either met by Dormond or obvious in view of Smith or Crossland
who taught portable computers. Answer 6, 17-18, & 26-27. The Examiner
found that Dormond’s inference engine satisfied the claimed limitation of “a
run-time executor for executing said application and said libraries to facilitate
data collection operations.” Answer 13 & 23.
Patent Owner contends the Dormond does not disclose the claimed
“run-time executor” or a “portable computer” as those terms are properly
construed. App. Br. 10.

Findings of Fact (“Findings”)
The following numbered findings of fact (“Findings”) are pertinent to
this determination:
1. Dormond describes a computer system and method of suggesting
treatments for physical trauma (Dormond, Abstract).
2. In one embodiment, Dormond describes an expert system 1 which
“includes an inference engine and processor 10, inference interface 11,
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

16
application program 12 and application interface 13.” Dormond, col. 3, ll. 42-
44.
3. Dormond shows the “inference engine and processor 10” as a single
box in the flow chart depicted in Figure 1. Dormond states as follows:
The inference engine and processor 10 functions as in inference
engine, under the control of an inference engine program, and
also executes the application program 12, when necessary to
perform application program functions, under the overall control
of the inference engine.
Dormond, col. 3, ll. 44-49.
4. Dormond teaches:
The inference engine then branches to the rule that updates
INPUT-READ, namely Rule 26, which executes a disk operating
system call to a batch file INITIT.BAT. This batch file, which
also appears in the microfiche appendix, calls the application
program 12, FIG. 1.
Dormond, col. 10, ll. 13-18.
5. Dormond teaches:
The inference engine program, which is also executed in the
computing device, uses the knowledge base and information
related to the responses elicited from the user, for selecting one
or more suggested treatments.
Dormond, Abstract.
6. Dormond teaches:
The application program is executed in the computing device and
interactively displays a series of screens, including at least some
of the graphical illustrations, to elicit reponses [sic] from the user
concerning the specific type of physical trauma and specific
characteristics of the patient.
Dormond, col. 2, ll. 63-68.

Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

17
Discussion
Patent Owner contends that Dormond does not disclose or suggest to
one of ordinary skill in the art at the time of the invention a “run-time
executor” or a “portable” computer, as those claims are properly construed.
App. Br. 10.

Run-time executor
Patent Owner contends that Dormond does not describe the claimed
“run-time executor for executing said application and said libraries to
facilitate data collection operations.” According to Patent Owner, the
inference engine described in Dormond is a “main program” that “makes a
program call to start the application program, and then waits for that program
to finish before proceeding” which is not a “separate run-time utility (i.e., a
software tool to facilitate data collection operations.).” App. Br. 13. Patent
Owner further argues that the Examiner did not give “patentable weight” to
the recited limitation “to facilitate data collection operations.” App. Br. 14.
Patent Owner also describes various steps performed by the run-time utility
which Patent Owner contends constitute its role in facilitating data collection.
App. Br. 10-12.
The issue is whether Dormond describes a run-time executor as that
term is properly interpreted. After closely reading the written description of
the ‘362 patent, we determined that the “run-time executor” was a software
program which carries out the instructions of a data collection application,
helping or assisting in the collection of data. The ‘362 patent did not provide
any special definition of the claimed software program nor do the claims
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

18
require the run-time executor to facilitate data collection in any specific way.
Thus, although the ‘362 patent describes a preferred embodiment which
performs several specific tasks as discussed in Dr. Wolfe’s declaration (Wolfe
Decl. ¶ 10), the claim does not require it to accomplish any of these disclosed
tasks. Neither Dr. Wolfe, in his declaration, nor Patent Owner, in the Appeal
Brief, provide a compelling reason to construe the term “run-time executor”
and its associated function so narrowly.
As found by the Examiner, Dormond expressly states that the inference
engine “executes” the application program 12, the same term which is used in
the claim to describe the function of the run-time executor. Finding 3. The
application program displays screens and elicits responses concerning the
specific type of physical trauma and specific characteristics of the patient
(Finding 6) to produce data, and thus serves as a data collection application.
The inference engine executes the application (Finding 3) and calls the
application program (Finding 4), which Patent Owner acknowledges starts the
application program. App. Br. 13. In so doing, the inference engine
“facilitate[s] data collection operations” because by executing and starting the
application program, the run-time utility helps bring about (“facilitates”) the
data entry.
Patent Owner’s argues that Dormond does not facilitate data collection
because Dormond does not describe the same steps disclosed in the ‘362
patent, such as changing the location of library entries, adding new entries into
the libraries, displaying help text or messages, setting up constant answers on
all screens, etc. App. Br. 11; Wolfe Decl. ¶ 10. However, as already stated,
these steps are just preferred embodiments of a run-time executor. The claim
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

19
does not recite such limitations and it is improper to read preferred
embodiments into the claim. Sjolund v. Musland, 847 F.2d at 1581; In re Van
Geuns, 988 F.2d at 1184; Enzo Biochem., Inc. v. Applera Corp., 599 F.3d at
1342.
Dr. Wolfe testified that the “run-time utility would provide the detailed
program code for complex computer function” which saves programming
time. Wolfe Decl., p. 3, ¶ 9. The inference engine serves this purpose by
executing the application program, starting it, and using knowledge generated
by the application program. Findings 3-5. It is also commercial product
(Dormond, col. 3, ll. 55-58) that frees the programmer to develop the
application program 12, the same advantage ascribed by Dr. Wolfe for a run-
time utility/executor. Wolfe Decl., p. 3, ¶ 9. While the inference engine may
perform additional tasks (Finding 5), those tasks do not deter it from
performing the functions expressly recited in the claim of executing the
application program to facilitate data collection operations.
Dr. Wolfe attempts to distinguish the claim from Dormond’s teachings
by arguing that the inference engine is a “main software application” which
does not “run[ ] on top of the inference engine” or “run[ ] on top of a software
tool like a run-time executor.” Wolfe Decl., p. 4, ¶ 12.
This attempted distinction is not persuasive. It is unclear how being a
“main software application” precludes the inference engine from serving the
same purpose as the claimed run-time executor. The issue is whether the
inference engine executes a data collection application and libraries to
facilitate data collection operations, functions which we have found to be
performed by Dormond’s inference engine.
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

20
Portable
The claimed data collection unit is recited in the preamble of the claim
to be “portable.” The Examiner construed portable to mean “capable of being
carried” and found that Dormond met this limitation. Answer 6.
Alternatively, the Examiner found that portable computers, such as hand held
computers, were well known at the time of the invention as established by
Smith and Crossland, making it obvious to have made Dormond’s computer
portable. Answer 26-27.
The evidence of record supports the Examiner's determinations. As
found by the Examiner, Dormond discloses that 80286 or 80386 personal
computers could be used for its computer systems. Dormond, col. 3, ll. 58-61.
Patent Owner contends that such computers operated through a standard
electrical power cable and thus could not be moved around, as required by the
term “portable.” App. Br. 14. Apparently, Patent Owner has construed the
term “portable” to mean that the portable computer must be capable of
operating while being carried around, and thus when the portable computer is
tethered to an electrical outlet, the computer could not satisfy that limitation.
Patent Owner has not provided sufficient support for this construction. The
claim preamble simply recites that the data collection device is portable; it
does not expressly require the device to be operating while it is being toted
from one location to another. Patent Owner appears to be improperly reading
limitations from the ‘362 specification into the claims.
Likewise, Patent Owner does not dispute that Dormond’s computer
could be carried around, but rather argues that such personal computer with a
CRT “is not a portable laptop computer.” App. Br. 15. However, the claims
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

21
do not limit the “portable” device to a laptop. Patent Owner has not
established that the term “portable” as recited in the claim would be construed
by one of ordinary skill in the art to be limited to laptops. While the term is
broad enough to include laptops, there is insufficient evidence to limit the
claim to this narrow class of portable computers.
With respect to the rejections over Dormond combined with Smith or
Crossland, the Examiner cited sufficient evidence from the Request for
Reexamination that it would have been obvious to have made Dormond's
portable as described by Smith and Crossland. Answer 19. Patent Owner did
not identify a defect in the referenced facts nor in the reasoning. As we find
none, we affirm the rejections for the reasons relied upon by the Examiner.

Summary
We affirm the Examiner’s conclusion that claim 12 is not patentable in
view of the prior art cited in Rejections 1-3.

Claim 13
Claim 13 is dependent on claim 12, and further recites that the libraries
include sequential, consequential, and syntax libraries.
The Examiner found that Dormond disclosed a syntax library as
illustrated in Figure 14. Answer 14. In addition to arguing the claim
interpretation as discussed above, the Examiner found it to be “axiomatic that
an application designer (e.g. a programmer) would be able to change a
message in the syntax library by typing the message since such ability would
have been part of the ordinary skill set of an application designer.” Answer
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

22
28-29. Patent Owner contends that Dormond does not disclose a syntax
library that can be changed. App. Br. 15. Relying on passages at column 14,
lines 26-35 of the ‘362 patent as quoted above (App. Br. 15), Patent Owner
distinguishes claim 13 from Dorman, arguing:
In the case of Dormond, it shows syntax messages displayed to a
user on a screen in FIGS. 14 and 15, but does not suggest that
those messages may be changed via a library. (See Decl. of A.
Wolfe, at ¶ 21.) In Dormond, the displayed syntax messages
could be changed only by rewriting the software code and then
recompiling the program (which is disclosed as being written in
Microsoft® C) (Dormond, col. 8, lines 44-45.)
App. Br. 16.
Patent Owner’s argument is not persuasive.
Figure 14 of Dormond cited by the Examiner shows a screen of
information which is displayed to a user in order to elicit information.
Dormond, col. 3, ll. 18-21; Fig. 14. Patent Owner acknowledged that this
information constitutes syntax messages. App. Br. 16. Figures 2-17 of
Dormond show additional menus for the same purpose. All are described as
part of various libraries of databases of information that are displayed to users.
Dormond, col. 3, ll. 18-21; col. 5, ll. 1-3; col. 8, ll. 30-40. Such databases
would be reasonably understood to be syntax libraries. The databases, which
are syntax libraries, are loaded in the computing devices memory. Dormond,
col. 2, l. 59. Dormond doesn’t precisely explain how these databases are
produced, but as indicated by the Examiner, it is self-evident that such
databases would need to be created first and have the ability to be changed, if
so desired. Patent Owner admits the databases “could be changed . . . by
rewriting the software code and then recompiling the program.” App. Br. 16.
The claims, however, are not limited to changing the syntax information as
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

23
described at column 14, lines 26-35 of the ‘362 patent. Rather, the claim is
reasonably interpreted not to restrict how the library is changed. We do not
discern any language in the claim as it would be understood by one of
ordinary skill in the art in the light of the ‘362 patent that would exclude
“changing the syntax of the information displayed by the input/output device”
from reading on rewriting code, recompiling it, or any other method to change
the information in Dormond’s syntax libraries.
Dr. Wolfe testified that Dormond does not disclose “that the syntax
may be changed via a library (without re-writing the original code and
recompiling the program).” Wolfe Decl. ¶ 21. However, neither Dr. Wolfe
nor Patent Owner in the Appeal Brief provided sufficient evidence that the
claims exclude “re-writing the original code and recompiling the program” as
the method by which the syntax information is changed.
In sum, we conclude that the preponderance of the evidence supports
the Examiner’s conclusion that Dormond describes the claimed syntax library.

Summary
We affirm the Examiner’s conclusion that claim 13 is not patentable in
view of the prior art cited in Rejections 1-3.

MONTAGNA REJECTIONS
The Examiner cited the Request for Reexamination as the basis for
rejecting claims 12 and 13 as obvious in view of Montagna. Answer 20.
Patent Owner contends that Montagna does not disclose or suggest to one of
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

24
ordinary skill in the art at the time of the invention a "run-time executor" or
"syntax library", as those terms are properly construed. App. Br. 17.

Claim 12
In the Request for Reexamination, the Third Party Requester proposed
that Montagna met every limitation of claim 13, and cited factual support for
each limitation. Request 27-31. As with the rejection over Dormond, Patent
Owner contends that Montagna does not describe the claimed run-time
executor with its recited functions.
Patent Owner contends that Montagna “teaches a main application” that
“has nothing to do with using a separate run-time executor.” App. Br. 18.
Patent Owner contends that the menus described in Montagna are part of
“main application,” and not a run-time executor, because the former handles
all computing steps. Id..
Once again, the rejection turns on the proper interpretation of a “run-
time executor.” We have construed that term to mean a software program
which carries out the instructions of a data collection application and libraries,
helping or assisting in the collection of data. Execution, as acknowledged by
Dr. Wolfe, includes sequencing through pages of text and images. Wolfe
Decl., p. 2, ¶ 8.
Montagna describes a software application which meets this limitation.
Montagna describes (Findings):
7. Pages, graphics, worksheets, and menus. Montagna, col. 5, ll. 16-
21; col. 9, ll. 10-17; col. 13, ll. 7-11.
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

25
8. Software that is “used to retrieve and present the text, worksheets,
graphics and data and perform computations according to the desired
application and commands entered into the terminal 22 by a user.” Montagna,
col. 6, ll. 21-26.
9. Menus which are displayed to the user which the user touches on a
touchscreen to enter data. Montagna, col. 13, l. 7 to col. 14, l. 38; col. 13, 58-
60.
Montagna’s pages, graphics, worksheets and menus serve as the data
collection application and libraries recited in claim 12. Finding 7. The
software retrieves and presents the latter, and therefore executes the data
application program as the term “execute” is properly interpreted. Finding 8.
The software also presents menus and worksheets to a user which enables the
user to enter information (Findings 8 & 9), helping to bring about data
collection, and therefore meeting the claimed requirement of “a run-executor
for executing said application and said libraries to facilitate data collection
operations.”
Patent Owner contends that the Montagna’s software is not a run-time
executor because it performs all the system’s functionality. App. Br. 17-18.
This argument is not persuasive because even if Montagna’s system performs
additional tasks, it still performs those of the claimed run-time executor as we
have construed the term. Dr. Wolfe’s testimony that Montagna’s software is a
main application stored on a floppy disk and “not a software tool to facilitate
data collection operations” is unpersuasive because he failed to distinguish the
two factually. Wolfe Decl., p. 4, ¶ 14.
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

26
With respect to the rejections over Montagna combined with Smith or
Crossland, the Examiner cited sufficient evidence from the Request for
Reexamination that it would have been obvious to have made Montagna’s
system portable as described by Smith and Crossland. Answer 20. Patent
Owner did not identify a defect in the referenced fact-finding nor in the
reasoning. As we find none, we affirm the rejections for the reasons relied
upon by the Examiner.

Summary
We affirm the Examiner’s determination that claim 12 is not patentable
in view of the prior art cited in Rejections 4-6.

Claim 13
For the syntax library, the Requester cited Montagna’s disclosure that
"the software subroutine may inform the user that if he or she repairs or
replaces a part ... then he or she must also perform a related service, such a
front wheel alignment." Montagna, col. 5, ll. 57-62; Request 31. The
Requester also cited Montagna’s teaching that “messages such as the cost of
repair are communicated to the user during operation.” Montagna, col. 14, ll.
62-65; Request 31. Patent Owner contends that Montagna does not meet the
disputed limitation because
Modifying any of the displayed syntax messages would require
starting over and rewriting a new main application or indexing
new text on the CD-ROM, and neither option is suggested in
Montagna. That is, Montagna does not teach changing any syntax
at all, whether it is to change what is being displayed, or to alter
what the device is capable of displaying.
Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

27
App. Br. 19.
This argument is not persuasive. As acknowledged by Patent Owner,
Montagna discloses that its databases, i.e., syntax libraries, are stored on CD-
ROM. Montagna, col. 5, ll. 65-66; col. 14, ll. 50-60. Such information
includes, for example, manufacturer and part number, and graphic images of
the region of vehicle damage. Montagna, col. 5, ll. 57-60; col. 13, 58-66. The
libraries, as admitted by Patent Owner could be changed by “rewriting a new
main application or indexing new text on the CD-ROM.” App. Br. 19. Patent
Owner attempts to distinguish Montagna by arguing that Montagna does teach
changing the syntax information, but claim 13 is not a method claim and does
not require that the step of changing the library be accomplished. Rather, the
syntax library must simply be capable of change, the latter which would be
accomplished, e.g., by indexing new text on the CD-ROM or rewriting the
main application.

Summary
We affirm the Examiner’s determination that claim 13 is not patentable
in view of the prior art cited in Rejections 4-6.

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

Appeal 2012-007812
Reexamination Control 90/009,464
Patent US 5,675,362

28
AFFIRMED

KMF

FOR PATENT OWNER:

BLANK ROME LLP
WATERGATE
600 NEW HAMPSHIRE AVENUE, N.W.
WASHINGTON, DC 20037

FOR THIRD PARY REQUESTER:

MORRISON & FOERSTER, LLP
555 WEST FIFTH STREET
SUITE 3500
LOS ANGELES, CA 90013-1024